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Avoiding the False Marking Cottage Industry



By Eric Schlichter and Robert Calico of Howrey LLP

Eric Schlichter is a partner in Howrey LLPís Houston office.  Ericís practice includes patent litigation, prosecution and counseling with a focus on patent litigation involving oil and gas drilling technology, downhole tools and production equipment.  His prosecution and counseling expertise includes analysis and opinions, licensing, joint development and settlement agreements for companies in diverse technical fields.
Robert Calico is an associate in Howrey LLP's Houston office.  Robert's patent litigation experience includes cases in the telecommunications and oil and gas industries.  Prior to joining Howrey he worked for eight years as an electrical engineer in the personal computer industry doing development and design work.

The recent Forest Group decision by the Court of Appeals for the Federal Circuit has changed the standard by which damages are calculated under the false marking provision of Title 35 and has resulted in a dramatic rise in false marking lawsuits. These lawsuits, and the potential liability attached, suggest that some patent holders may reevaluate their patent marking policies and procedures. In order to minimize potential liability and avoid litigation, some patent holders might make decisions and implement new policies quickly. However, it is important that patent holders' decisions are guided not just by the Forest Group decision, but by other recent Federal Circuit decisions that impact notice provisions and the lifespan of a patent. This article will provide a brief summary of recent decisions as well as the pros and cons of various courses of action that patent holders may consider in evaluating their patent marking policies.

Product markings indicating "this product is covered by one or more of the following patents" or "pat." are commonplace. Even prior to a patent issuing, would-be patent holders often mark products with "patent pending" or the like. Products are marked as such due to the notice requirements of 35 U.S.C. ß 287(a), which states that "[p]atentees, and persons making, offering for sale, or selling within the United States any patented article...

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